throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Entered: October 2, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUN PHARMACEUTICAL INDUSTRIES, LTD., SUN
`PHARMACEUTICAL INDUSTRIES, INC., and
`SUN PHARMA GLOBAL FZE,
`Petitioner,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`_______________
`
`Case IPR2017-01929
`Patent US 9,187,405 B2
`_______________
`
`Before LORA M. GREEN, CHRISTOPHER M. KAISER, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review and Granting Motion for Joinder
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`

`

`IPR2017-01929
`Patent US 9,187,405 B2
`
`
`INTRODUCTION
`I.
`Sun Pharmaceutical Industries, Ltd., Sun Pharmaceutical Industries,
`Inc., and Sun Pharma Global FZE (collectively, “Sun”) filed a Petition
`requesting an inter partes review of claims 1–6 of U.S. Patent
`No. 9,187,405 B2 (“the ’405 patent”). Paper 2 (“Pet.”). Along with the
`Petition, Sun filed a Motion for Joinder to join this proceeding with
`IPR2017-00854. Paper 3 (“Mot.”). Sun filed its Petition and Motion for
`Joinder on August 16, 2017, within one month after we instituted trial in
`IPR2017-00854. Patent Owner, Novartis AG, (“Novartis”) has not filed a
`Preliminary Response to the Petition, and any such response is due
`November 25, 2017.
`As explained further below, we institute trial on the same grounds as
`instituted in IPR2017-00854 and grant Sun’s Motion for Joinder.
`
`DISCUSSION
`II.
`In IPR2017-00854, Apotex, Inc. and Apotex Corp. (collectively,
`“Apotex”) challenged claims 1–6 of the ’405 Patent on the following
`grounds:
`Ground Claims
`1
`1–6
`
`References
`Kovarik1 and Thomson
`
`Basis
`§ 103
`
`
`1 Kovarik and Appel-Dingemanse, WO 2006/058316, published June 1,
`2006.
`
`2
`
`

`

`IPR2017-01929
`Patent US 9,187,405 B2
`
`Ground Claims
`2
`1–6
`3
`1–6
`
`
`References
`Chiba,2 Kappos 2005,3 and Budde4
`Kappos 20105
`
`Basis
`§ 103
`§ 102
`
`After considering the Petition and Patent Owner’s Preliminary
`Response, we instituted trial in IPR2017-00854 on each of the three asserted
`grounds. IPR2017-00854, Paper 11, 27. On August 9, 2017, we instituted
`inter partes review on those same grounds in IPR2017-01550 and granted
`Petitioner Argentum Pharmaceuticals LLC’s motion for joinder with
`IPR2017-00854. IPR2017-00854, Paper 10, 5. On September 11, 2017, we
`similarly instituted inter partes review on those same grounds in IPR2017-
`01946 and granted Petitioner Actavis Elizabeth LLC and Teva
`Pharmaceuticals USA, Inc.’s (collectively, “Teva’s”) motion for joinder with
`IPR2017-00854. IPR2017-00854, Paper 23, 5.
`As with Argentum’s and Teva’s Petitions, Sun’s Petition is
`substantively identical to Apotex’s Petition, challenging the same claims
`based on the same art and the same grounds. Compare IPR2017-01929,
`Paper 2, with IPR2017-00854, Paper 2. For the same reasons stated in our
`Decision on Institution in IPR2017-00854, we institute trial in this
`proceeding on the same three grounds.
`
`
`2 Chiba et al., US 6,004,565, issued Dec. 21, 1999. Ex. 1006.
`3 Kappos et al., “FTY720 in Relapsing MS: Results of a Double-Blind
`Placebo-Controlled Trial with a Novel Oral Immunomodulator,” 252 (Suppl
`2) J. NEUROLOGY Abstract O141 (2005).
`4 Budde, et al., “First Human Trial of FTY720, a Novel Immunomodulator,
`in Stable Renal Transplant Patients,” 13 J. AM. SOC. NEPHROLOGY 1073-
`1083 (2002).
`5 Kappos et al., “A Placebo-Controlled Trial of Oral Fingolimod
`in Relapsing Multiple Sclerosis,” 362(5) N. ENGL. J. MED. 387–401.
`
`3
`
`

`

`IPR2017-01929
`Patent US 9,187,405 B2
`
`
`Having determined that institution is appropriate, we now turn to
`Sun’s Motion for Joinder. 35 U.S.C. § 315(c). Section 315(c) provides, in
`relevant part, that “[i]f the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311.” Id.
`When determining whether to grant a motion for joinder we consider factors
`such as timing and impact of joinder on the trial schedule, cost, discovery,
`and potential simplification of briefing. Kyocera Corp. v. SoftView, LLC,
`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`Sun’s motion for joinder is unopposed by all concerned parties. The
`time for Novartis to oppose the motion has expired. See 37 C.F.R. §
`42.25(a)(1)). Further, Sun informs us that Apotex, Argentum, and Actavis
`do not oppose the motion. See Mot. 2 & n.1; Ex. 3001 (email
`communication from Samuel S. Park, dated September 29, 2017).
`Under the circumstances of this case, we determine that joinder is
`appropriate. Sun raises no new grounds of unpatentability from IPR2017-
`00854 and contends that there will be no impact on the trial schedule
`previously set in that case. Mot. 8; see IPR2017-00854, Paper 12. As Sun
`notes, the Petition in IPR2017-00854 is substantively identical to the
`grounds, analysis, exhibits,6 and expert declarations relied on in the instant
`proceeding. Mot. 2, 5, 6. Sun agrees to “coordinate with Apotex regarding
`questioning at depositions and at the oral hearing,” and suggests that
`
`
`6 Sun notes that, as compared to the Apotex Petition, it “added one
`additional exhibit (EX1041) which is a copy of the Federal Circuit Decision
`of April 12, 2017 affirming the Final Written Decision in IPR2014-00784,
`an IPR related to the present proceeding.” Mot., 5–6.
`
`4
`
`

`

`IPR2017-01929
`Patent US 9,187,405 B2
`
`
`“[b]ecause the Sun IPR is substantively identical to the Apotex IPR, the
`Board may adopt procedures similar to those used in other cases to simplify
`briefing and discovery during trial.” Mot. 9. With respect to such
`procedures, “Sun agrees to the same conditions as set forth in Paper 23 of
`IPR2017-00854.” Ex. 3001.
`In view of the foregoing, we find that joinder based upon the
`conditions stated in Sun’s Motion for Joinder will have little or no impact on
`the timing, cost, or presentation of the trial on the instituted grounds.
`Moreover, discovery and briefing will be simplified if the proceedings are
`joined. Thus, without opposition to the Motion for Joinder from any of the
`parties, the Motion is granted, subject to the same conditions previously set
`forth with respect to the Petitioners joined in IPR2017-00854, Paper 23,
`
`III.
`
`ORDER
`
`Accordingly, it is
`ORDERED that inter partes review is instituted in IPR2017-01929 on the
`following grounds:
`
`Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`combination of Kovarik and Thomson;
`
`Claims 1–6 under 35 U.S.C. § 103 as unpatentable over the
`combination of Chiba, Kappos 2005, and Budde;
`
`Claims 1–6 under 35 U.S.C. § 102 as anticipated by Kappos 2010.
`
`FURTHER ORDERED that Sun’s Motion for Joinder with IPR2017-00854
`is granted, subject to the same conditions previously set forth with respect to
`the Petitioners joined in IPR2017-00854, Paper 23;
`
`5
`
`

`

`IPR2017-01929
`Patent US 9,187,405 B2
`
`
`FURTHER ORDERED that IPR2017-01929 is terminated and joined to
`IPR2015-00854, pursuant to 37 C.F.R. §§ 42.72, 42.122, based on the
`conditions discussed above;
`
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-00854 (Paper 12) shall govern the joined proceedings;
`
`FURTHER ORDERED that all future filings in the joined proceeding are to
`be made only in IPR2017-00854;
`
`FURTHER ORDERED that the case caption in IPR2017-00854 for all
`further submissions shall be changed to add Sun Pharmaceutical Industries,
`Ltd., Sun Pharmaceutical Industries, Inc., and Sun Pharma Global FZE as
`named Petitioners after Apotex, Argentum, and Teva, and to indicate by
`footnote the further joinder of IPR2017-001929 to that proceeding, as
`indicated in the attached sample case caption;
`
`FURTHER ORDERED that a copy of this Decision shall be entered into the
`record of IPR2017-00854.
`
`
`
`
`
`
`
`6
`
`

`

`IPR2017-01929
`Patent US 9,187,405 B2
`
`
`
`FOR PETITIONER SUN PHARMA:
`Samuel Park
`WINSTON & STRAWN LLP
`spark@winston.com
`
`FOR PETITIONER APOTEX:
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`FOR PETITIONER ARGENTUM:
`Teresa Stanek Rea
`Deborah H. Yellin
`Shannon M. Lentz
`CROWELL & MORING LLP
`TRea@Crowell.com
`DYellin@crowell.com
`SLentz@Crowell.com
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS, LLC
`TLiu@agpharm.com
`
`FOR PETITIONER TEVA:
`Amanda Hollis
`Eugene Goryunov
`KIRKLAND & ELLIS LLP
`amanda.hollis@kirkland.com
`egoryunov@kirkland.com
`
`FOR PATENT OWNER:
`Jane M. Love
`GIBSON, DUNN & CRUTCHER LLP
`jlove@gibsondunn.com
`
`7
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper
`Entered:
`
`
`Sample Case Caption
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APOTEX INC., APOTEX CORP.,
`ARGENTUM PHARMACEUTICALS LLC,
`ACTAVIS ELIZABETH LLC, TEVA PHARMACEUTICALS USA, INC.,
`SUN PHARMACEUTICAL INDUSTRIES, LTD.,
`SUN PHARMACEUTICAL INDUSTRIES, INC., and
`SUN PHARMA GLOBAL FZE,
`Petitioners,
`
`v.
`
`NOVARTIS AG.,
`Patent Owner.
`____________
`Case IPR2017-008541
`Patent US 9,187,405 B2
`____________
`
`
`
`
`
`
`
`
`1 Cases IPR2017-01550, IPR2017-01946, and IPR2017-01929 have been
`joined with this proceeding.
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket